Fcoa, LLC v. Foremost Title & Escrow Servs., LLC

• Decision Date: 01 August 2019
• Docket Number: Case No. 17-23971-WILLIAMS
• Parties: FCOA, LLC, Plaintiff, v. FOREMOST TITLE & ESCROW SERVICES, LLC, Defendant.
• Court: U.S. District Court — Southern District of Florida

416 F.Supp.3d 1381

FCOA, LLC, Plaintiff,

v.FOREMOST TITLE & ESCROW SERVICES, LLC, Defendant.

Case No. 17-23971-WILLIAMS

United States District Court, S.D. Florida.

Signed August 1, 2019

John Wiley Horton, Adrienne Love, William D Horgan, Pennington, P.A., Tallahassee, FL, for Plaintiff.

Natasha Shaikh, Aventura, FL, Robert A. Stok, Fort Lauderdale, FL, Defendant.

ORDER

KATHLEEN M. WILLIAMS, UNITED STATES DISTRICT JUDGE

THIS MATTER is before the Court on the Parties' cross motions for summary judgment. For the reasons set forth below, Plaintiff' FCOA, LLC's motion for summary judgement (DE 87) is DENIED and Defendant Foremost Title & Escrow, LLC's motion for summary judgment (DE 84) is GRANTED.

I. BACKGROUND

This is a trademark infringement and unfair competition case. Plaintiff, FCOA is a company that is part of the Farmers Insurance Group. (DE 86 ¶ 3).¹ Since its formation in 1952, FCOA, through its related agencies, has marketed and sold insurance products and services under the "FOREMOST" name. (DE 86 ¶ 4).² FCOA, however, does not itself issue or sell insurance policies, and does not hold any licenses or employ any insurance agents which would enable it to offer insurance services in Florida. (DE 84-1 ¶ 12). FOREMOST branded insurance products are offered by over 33,000 contracted agents at more than 77,000 locations nationwide. (DE 86 ¶ 11). Over the years, FCOA has spent millions of dollars to advertise its marks. (DE 86 ¶ 14). Although FCOA has no physical presence in Florida, over 95,000 customers in Florida hold FOREMOST insurance policies. (DE 86 ¶ 10; DE 96 ¶ 10). FCOA markets its FOREMOST brand using online advertising, websites and social media. (DE 86 ¶ 17). The mark is also featured in numerous magazines ads and brochures. (Id. ). FCOA does not offer title insurance services, nor is it permitted to do so under Florida law. (DE 84-1 ¶ 1).

Defendant, Foremost Title & Escrow, LLC ("FT&E") is an affiliate of the law firm Stok Folk + Kon. (DE 84 at 1). FT&E began its operations in 2015 to offer real-estate closing services including title insurance. (DE 108 at 9). Other than title insurance, FT&E does not offer any additional insurance related products. (DE 84-1 ¶ 1). FT&E utilizes online advertising, websites and social media to advertise its services. (DE 86 ¶ 25; DE 96 ¶ 25). FT&E also advertises its services through trade shows, public events and by direct emails to homeowners. (DE 86 ¶ 28; DE 96 ¶ 28).

On December 15, 2016, FT&E received a cease and decease letter from FCOA, claiming that FT&E was infringing on FCOA's marks. (DE 84-1 ¶ 3). FT&E disputed the allegations of infringement and in the ensuing ten months invested time and money to develop a website to promote its services, create public awareness in FT&E's specific market and develop customers and partners. (DE 84-1 ¶ 3). On February 2, 2017, FCOA sent a letter to the Department of Financial Services ("DFS") of Florida requesting that it disapprove FT&E's use of the FOREMOST mark. (DE 84-1 ¶ 5). But the DFS denied FCOA's request explaining that "the name Foremost Title & Escrow Services, LLC is not viewed by the [DFS] as being too similar." (Id. ). On March 24, 2017, FCOA renewed its request to the DFS and the DFS again denied it. (DE 84-1 ¶ 5). Although FCOA has not been able to identify a single instance of actual consumer confusion (DE 84-1 ¶ 10), FCOA conducted two surveys that revealed that 74.2% of the participants who said they had heard of "Foremost Insurance" and "Foremost Title & Escrow" believed the two marks were associated or affiliated. (DE 86 ¶¶ 45-46). Fifty eight percent of the group of participants that believed the two marks were associated or affiliated based their belief on the fact that the names sounded the same. (Id. ).

FCOA brings this action against FT&E asserting five claims all stemming from the alleged trademark infringement of its FOREMOST marks.

II. LEGAL STANDARD

Summary judgment is appropriate "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). Under this standard, "[o]nly disputes over facts that might affect the outcome of the suit under the governing [substantive] law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). And any such dispute is "genuine" only "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id.

In evaluating a motion for summary judgment, the Court considers the evidence in the record, "including depositions, documents, electronically stored information, affidavits or declarations, stipulations ..., admissions, interrogatory answers, or other materials ...."

Fed. R. Civ. P. 56(c)(1)(A). The Court "must view all the evidence and all factual inferences reasonably drawn from the evidence in the light most favorable to the nonmoving party, and must resolve all reasonable doubts about the facts in favor of the non-movant." Rioux v. City of Atlanta , 520 F.3d 1269, 1274 (11th Cir. 2008) (quotation marks and citations omitted). At the summary judgment stage, the Court's task is not to "weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial." Anderson , 477 U.S. at 249, 106 S.Ct. 2505.

For issues for which the movant would bear the burden of proof at trial, the party seeking summary judgment "must show affirmatively the absence of a genuine issue of material fact: it must support its motion with credible evidence...that would entitle it to a directed verdict if not controverted at trial. In other words, the moving party must show that, on all the essential elements of its case on which it bears the burden of proof at trial, no reasonable jury could find for the non-moving party. If the moving party makes such an affirmative showing, it is entitled to summary judgment unless the non-moving party, in response, come[s] forward with significant, probative evidence demonstrating the existence of a triable issue of fact." Fitzpatrick v. City of Atlanta , 2 F.3d 1112, 1115-16 (11th Cir. 1993) (emphasis in original).

However, in a nonjury case such as this, in which the Court is the trier of fact and there are "no issues of witness credibility," the Court may draw inferences against the non-moving party at the summary judgment stage based on the affidavits, depositions and other evidence in the record, because "[a] trial on the merits would reveal no additional data" nor "aid the determination." Nunez v. Superior Oil Co. , 572 F.2d 1119, 1123-24 (5th Cir. 1978).

Additionally, in trademark infringement cases, courts in this Circuit have decided the issue of likelihood of confusion as a matter of law. Alliance Metals, Inc., of Atlanta v. Hinely Industries, Inc. , 222 F.3d 895, 907 (11th Cir. 2000) (affirming grant of summary judgment to former employer for former employee's infringement through use of confusingly similar trade name); Investacorp, Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C. , 931 F.2d 1519, 1523 (11th Cir.1991) (affirming grant of summary judgment finding no infringement of descriptive term "invest" used by defendant Investcorp); Beef/Eater Restaurants, Inc. v. James Burrough Limited , 398 F.2d 637, 639 (5th Cir.1968) ("the trial judge, by inspection of trademarks, may himself determine, and must determine, the likelihood of confusion"); see also Little League Baseball, Inc. v. Daytona Beach Little League, Inc. , 1977 WL 22777, 193 U.S.P.Q. 611, 614 (M.D. Fla. 1977) (granting summary judgment to franchisor on infringement claim against former franchisee).

III. DISCUSSION

Both parties argue they are entitled to full summary judgment.³ FCOA alleges that FT&E's use of the term "Foremost" has infringed on FCOA's registered marks, in violation of 15 U.S.C. § 1114 of the Lanham Act. Under the Lanham Act, a defendant is liable for infringement if, without consent, he uses "in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark" which is "likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114(1)(a). To prevail on a federal trademark infringement claim, a plaintiff must demonstrate (1) that its mark has priority, and (2) that the defendant's mark is likely to cause consumer confusion. Frehling Enters., Inc. v. Int'l Select Grp., Inc. , 192 F.3d 1330, 1335 (11th Cir. 1999). FT&E does not dispute that at least some of FCOA's marks have priority. (See DE 86 ¶6; 86 ¶6). The issue is whether FT&E's mark is likely to cause consumer confusion.⁴

Courts assessing claims pursuant to either § 32(a) or § 43(a) apply the same seven-factor "likelihood of confusion" test. See Tana v. Dantanna's , 611 F.3d 767, 781 n.5 (11th Cir. 2010). "Although likelihood of confusion is a question of fact, it may be decided as a matter of law." Tana , 611 F.3d at 775 n.7. At summary judgment, courts must assess all seven likelihood of confusion factors. See Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC , 369 F.3d 1197, 1207 (11th Cir. 2004). The Court addresses each factor below.

1. Strength of the "FOREMOST" marks

"This first factor assesses the strength of the plaintiff's marks." Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes & of Malta v. Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, The Ecumenical Order , 809 F.3d 1171, 1182 (11th Cir. 2015) (citing John H. Harland Co. v. Clarke Checks, Inc. , 711 F.2d 966, 973 (11th Cir. 1983) ). It is the "second most important factor in the seven-factor balancing test for confusion." Id. at 1182 (quotation marks and citation omitted). "The stronger the mark, the greater the scope of protection accorded it, the weaker the mark, the less trademark protection it receives." Frehling , 192 F.3d at 1335.

"A factfinder...